What are the biggest challenges facing certification services and marks, and how do you overcome these?
Certification and service mark protection involves product conformity systems, regulation of use, product certifier liability, antitrust, consumer protection, standard setting and interoperability. It is important to understand the local specialised terrain and to work with local experts to avoid or overcome the challenges involved.
How do you engage external stakeholders and authorities on the importance of IP protection?
Engagement in complex topics such as trademarks or certification marks should be part of a regular programme involving training and the dissemination of information. Engaging stakeholders in concise, regular intervals helps to get the right message across. The Forest Stewardship Council (FSC) IP team has succeeded in providing webinars on core IP topics and developing IP guidelines and FAQs to engage and support external stakeholders. Our marketing and communications, as well as our policies and standards units, are crucial in reaching specialised sectors and creating consumer awareness.
How do your priorities differ when it comes to managing the IP strategy of a non-profit organisation, compared to other organisations and private practice clients?
IP rights are highly valued at FSC, and IP portfolio matters remain a priority. Using trademarks and certification marks in the forestry sector has helped to guide the global market away from trading in uncertified forest materials and products and helped to raise awareness among consumers and manufacturers about the value of choosing sustainable sources. Understanding the true potential and value in certifications and ecolabels is on the rise generally and is being used by IP owners to capture economic benefits and to help protect natural forest heritage.
How do you manage budgets to ensure the best value for money when it comes to IP enforcement?
FSC’s policy of protecting and enforcing its intellectual property has been consistently demonstrated through investment. FSC’s legal department works with leading global IP attorneys in more than 125 countries – this ensures value for money as well as a successful result. In-house departments can be cost-effective by upscaling online enforcement with service provider technology and by incorporating AI for identification and searching.
If you could make one change to the global IP enforcement landscape, what would it be and why?
Some jurisdictions are still outmoded in removing bad-faith trademarks from the register. Greater harmonisation is required in this regard. Trademark owners will continue to face an uphill battle in removing such registrations in jurisdictions with weak mechanisms for removing offending registrations. Precious court resources will also continue to be inefficiently utilised in these jurisdictions, and costs mount when it comes to establishing earlier prior rights or undertaking non-use cancellation actions.
Trademark and IP Counsel
Ugreson Maistry is a senior IP lawyer experienced in cross-border IP prosecution, enforcement and licensing. As trademark and IP counsel for the Forest Stewardship Council (FSC), Mr Maistry is involved in the registration, enforcement and licensing of FSC’s trademarks and certification marks, domain names and copyright. He graduated with a BA LLB from the University of Cape Town, South Africa and an LLM with distinction from the Munich Intellectual Property Law Center, Germany.